The Advocate General of the Court of Justice of the European Union has issued an opinion in Case C-392/25, Bodegas Sanviver v. Bodegas Vega Sicilia, addressing whether a defendant in an EU trademark infringement action can challenge the trademark's validity at EUIPO after the lawsuit has begun. AG Andrea Biondi concluded that the EUIPO route remains open, even if the defendant did not file a counterclaim, and that this option stays available until the infringement proceedings reach a final judgment.
The case stems from a dispute over the word mark UNICO for wines, owned by Bodegas Vega Sicilia. After Vega Sicilia sued Bodegas Sanviver in July 2018, Sanviver did not counterclaim but instead filed an EUIPO invalidity application in December 2018. The EUIPO Cancellation Division declared the mark invalid on absolute grounds. Spanish courts disagreed over whether the infringement action had to be stayed, and the Spanish Supreme Court ultimately held that the EUIPO challenge was permissible and required a stay. The Alicante Court of Appeal then referred questions to the CJEU.
The Advocate General's opinion highlights a contrast with Spanish national law. Under the Spanish Trademark Act, once an infringement action is brought, a defendant cannot challenge a national trademark through the Spanish Patent and Trademark Office; it must file a counterclaim. The EU Trademark Regulation contains no equivalent provision, and the recently codified EU Design Regulation also lacks such a rule. The opinion warns that allowing late EUIPO challenges could have significant practical consequences, since EUIPO invalidity proceedings, including appeals to the Boards of Appeal and EU courts, can take years, during which infringement proceedings may remain stayed.